J 0011/25 - Inadmissible appeal parent, status divisional

Key points

• In T 1385/24, the applicant filed an appeal against a refusal decision dated 18.07.2024. The notice of appeal was filed in time, and the appeal fee was paid, but the Statement of grounds was filed late. No remedy was applied for. The appeal was rejected as inadmissible by a decision dated 20.02.2025 (issued in writing and notified on 26.02.2025).
• A divisional application was filed on 05.12.2024. Was the parent application pending on that day?
• The Board, in machine translation: " The Board is therefore of the opinion that the view expressed in J 22/13 should no longer be followed. "
• J 22/13: "Since the divisional application was filed only after the time limit for filing the statement of grounds of appeal in the parent application had already expired, the Board considered the parent application to be no longer pending at that point: there was no longer any possibility of carrying out a substantive examination of the parent application. After the expiry of the time limit for filing the statement of grounds of appeal, no ordinary legal remedies existed, and the decision became final"
• "if – as in the present case – an appeal that was initially validly filed subsequently becomes inadmissible because the statement of grounds of appeal is not filed or is filed only after the expiry of the prescribed time limit, this is not a sufficient reason to make an exception to Article 106(1), second sentence, EPC and to consider the suspensive effect that initially took effect as having been lifted as soon as the time limit for filing the statement of grounds of appeal expired. Rather, the suspensive effect ends only with the conclusion of the appeal proceedings, in the present case, that is, after the Board of Appeal has determined the inadmissibility of the appeal by decision. This termination has no retroactive effect with regard to divisional applications that were filed while the suspensive effect was in force. "
• "it follows from the decision of the Enlarged Board of Appeal G 2/19 that it is very problematic to adopt a general concept of a manifestly inadmissible appeal. [The EBA] therefore declined to answer question 1, which used this concept. The  question, with its criterion of an "appeal that is inadmissible at first glance," relieD on an indeterminate legal concept that does not originate in the EPC and for whose specification no further indications can be found therein (Reasons A.IV)."
• G 2/19, question 1: "1. In appeal proceedings, is the right to oral proceedings under Article 116 EPC limited if the appeal is manifestly inadmissible?"
• It may be noted that German national law (national patent law) has the concept and dispenses with hearings in such cases. However, the details of the German practice are unclear to me.
• The published decision is anonymised because the divisional application (EP24217722.8) is not yet published.
• The Legal Board seems to suggest that a timely appeal by the applicant/proprietor against a grant decision may open the possibility of filing a divisional application, following J 1/24 and disagreeing with T 700/25, but leaves that issue open.
• The Legal Board recalls that a late-filed appeal (notice of appeal and/or payment of the appeal fee) is not inadmissible but is deemed not to have been filed (G 1/18) and explains that, hence, such an appeal does not open the possibility of filing an appeal. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/j250011du1

https://www.epo.org/en/boards-of-appeal/decisions/t241385du1

Translation

1. The decision may be issued in writing without an oral hearing, as the appellant requested an oral hearing only as a subsidiary measure, i.e., in the event that the appeal is not granted. The Board grants the appeal and considers an oral hearing unnecessary.

2. The appeal is admissible.

3. Rule 36 EPC provides that a divisional application may be filed in respect of any "pending earlier European patent application".

4. The question to be decided here is whether, at the time the present application was filed as a divisional application, the parent application was still pending within the meaning of Rule 36 EPC. The EPC itself does not define the term "pending application". However, in its decision G 1/09 (OJ EPO 2011, 336), the Enlarged Board of Appeal analyzed in detail how this term is to be interpreted and clarified the principle. It held that, in the specific context of Rule 25 EPC 1973 (now Rule 36 EPC), a pending earlier European patent application is a patent application in a status in which the substantive rights arising therefrom under the EPC (still) exist (point 3.2.4 of the Reasons for the Decision).

5. In this context, the Enlarged Board of Appeal made the following observations:

"4.2.1 The applicant's substantive rights include the provisional protection afforded to him by the European patent application after its publication pursuant to Article 67 EPC 1973 (...) Article 67(4) EPC 1973 clearly sets out the period until which these substantive rights arising from a European patent application continue to exist if no patent is granted. In particular, it provides that the effects of the provisional protection afforded by the European patent application are deemed not to have occurred from the outset if the European patent application has been withdrawn, is deemed to have been withdrawn, or has been 'finally refused' ('rejetée en vertu d'une décision passée en force de chose jugée' in French)."

The applicant's substantive rights under Article 67 EPC 1973 can therefore continue to exist even after the application has been rejected, namely until the rejection becomes final ("passée en force de chose jugée"). Third parties who use the invention before the rejection decision becomes final risk being prosecuted under national law on the basis of Article 67 EPC 1973.

(...)

4.2.3 The legal consequences of Article 67(4) EPC 1973 mentioned above are independent of the suspensive effect of any appeal and of the point in time at which the first-instance rejection decision becomes effective, as in decision G 12/91 (OJ EPO 1994, 285, point 2 of the Reasons for the Decision). Rather, Article 67(4) EPC 1973, as an independent provision, establishes the point in time at which the substantive rights conferred by a European patent application, and thus also the pendency of the application, must end. The retroactive effect of a final rejection decision on the rights conferred on the applicant under Article 67 EPC 1973 does not alter the fact that the application remains pending until that decision becomes final.

4.2.4 From the foregoing, the Enlarged Board of Appeal concludes that, under the EPC, a patent application rejected by the Examining Division, if no appeal has been filed, remains pending within the meaning of Rule 25 EPC 1973 until the expiry of the appeal period and is no longer pending on the following day. The same applies to Rule 36(1) EPC 2000, both in its earlier and current versions.

6. In the context of the preliminary ruling procedure G 1/09, the President of the EPO also raised the question of whether the filing of a divisional application should be allowed even if an (apparently) inadmissible appeal is lodged in respect of the parent application.

However, since the legal question submitted only concerned the case in which no appeal is lodged, the Enlarged Board of Appeal declined to consider this further question raised by the President (No. 4.3.3 of the Reasons for the Decision).

7. In the present case, the appellant has filed an appeal against the rejection of her earlier application. The decision of the Enlarged Board of Appeal is therefore not directly applicable; however, the principle established by the Enlarged Board of Appeal must also be observed here, namely that the earlier application is to be regarded as pending if it has been rejected by the Examining Division, but this decision is not yet final.

According to Article 106(1), second sentence, EPC, an appeal has suspensive effect. This means that the effective lodging of an appeal prevents the challenged decision from becoming final (see J 28/94, Interlocutory Decision of 7 December 1994, OJ 1995, 742, point 2.2 of the Reasons, J 23/13, point 8.1 of the Reasons and J 22/13, point 4 of the Reasons). In general, therefore, a first-instance decision to dismiss can only become final if the appeal proceedings are concluded without the first-instance decision being overturned and the suspensive effect of the appeal thus ends.

However, the question arises whether exceptions to this general principle should be made when an appeal is or has become manifestly inadmissible. In this context, reference should first be made to decision G 2/19 (OJ EPO 2020, A87, point B.II.9 of the Reasons for the Decision). There, the Enlarged Board of Appeal held that the principle of suspensive effect applies only in the normal case, but not when an appeal has been lodged by a person who was not at all involved in the proceedings at first instance (see also J 1/24, point 10.5 of the Reasons for the Decision: "an example of a clearly inadmissible appeal that should have no suspensive effect is an appeal without basis in the EPC, e.g. filed by a third party.").

8. Of particular importance to the present case are decisions J 22/13 and J 23/13. Both decisions concerned the situation where an applicant had filed an appeal against the rejection of his earlier application but had not provided grounds for the appeal. In J 23/13, the divisional application had been filed before the expiry of the time limit for filing the grounds of appeal, whereas in J 22/13 it had been filed after the expiry of that time limit.

In the first scenario, the Board considered the divisional application to have been validly filed. The earlier application was deemed pending at the time the divisional application was filed, as it was not yet certain at that time that no statement of grounds of appeal would be filed. The fact that the appeal was later deemed inadmissible due to the failure to file the statement of grounds of appeal and was therefore rejected as inadmissible by the competent Board of Appeal did not alter the fact that substantive rights still existed at the time the divisional application was filed (J 23/13, point 8.3 of the Reasons for the Decision: "The fact that the appeal was later rejected as inadmissible cannot change the fact that, on the date when the divisional was filed, substantive rights were still in existence").

The Board assessed the different circumstances it had to deal with in J 22/13 in a different way. Since the divisional application was filed only after the time limit for filing the statement of grounds of appeal in the parent application had already expired, the Board considered the parent application to be no longer pending at that point: there was no longer any possibility of carrying out a substantive examination of the parent application. After the expiry of the time limit for filing the statement of grounds of appeal, no ordinary legal remedies existed, and the decision became final (see J 22/13, point 5 of the Reasons; likewise the obiter dictum in J 23/13, point 8.3 of the Reasons).

In J 22/13, the Chamber apparently took the view that although a suspensive effect had initially occurred through the effective filing of the appeal, this effect no longer existed at a later point in time, namely after the expiry of the time limit for filing the statement of grounds of appeal, since the appeal had obviously become inadmissible at that point.

9. The present case is the same as the one that formed the basis of the second decision (J 22/13), except that in the present case a statement of grounds of appeal was submitted, albeit only after the expiry of the time limit for submitting the statement of grounds of appeal.

10. If one were to follow the legal opinion expressed in decision J 22/13, the appellant's earlier application would also have to be regarded as no longer pending at the time of filing the divisional application, with the result that the application could not be treated as a divisional application and the appeal would have to be dismissed as unfounded.

11. However, in light of recent developments in the case law of the Boards of Appeal, it appears necessary to review the legal opinion presented in J 22/13. For this purpose, it is necessary to analyze in more detail the circumstances in which, similar to the situation mentioned in G 2/19 (appeal by a third party not involved in the proceedings, see point 7 above), exceptions to the suspensive effect of the appeal may be considered due to (obvious) inadmissibility.

12. In her observations on this matter in preliminary ruling procedure G 1/09 (see point 6 above), the President of the EPO addressed two scenarios: appeals clearly lodged after the expiry of the appeal period and appeals against the grant of a patent. Points 24 and 25 of her observations read as follows:

24. "However, if the appeal is deemed to have been filed, the suspensive effect should not depend on the fulfilment of all the requirements for admissibility. It should be denied only in cases in which the appeal is obviously inadmissible, since the suspensive effect ought not to lead to an unjustified delay in entry into force and implementation of a final decision.

25. This approach serves to avoid abusive appeals designed to construct artificially pending "parent applications". For example, filing a clearly time-barred appeal against a formally final decision to refuse should not make the original application pending again. Another example is the filing of an appeal against a decision to grant which matches the applicant's request for grant. Thus an obviously inadmissible appeal designed solely to keep the parent application pending should not have a suspensive effect."

13. In the first scenario mentioned by the then-President in point 25, however, it is neither necessary nor legally correct to assume the manifest inadmissibility of the appeal in order to deny its suspensive effect. Rather, this effect cannot occur because late appeals are not deemed to have been filed, as the Enlarged Board of Appeal has expressly clarified in its recent case law for all conceivable scenarios (late filing of the notice of appeal and late payment of the appeal fee, both individually and cumulatively) (see G 1/18, OJ EPO 2020, A26, Headnotes and points V, VI and IX of the Reasons). For this reason, Article 106(1), second sentence, EPC does not apply in the first place to "clearly late" appeals. The concept of "manifest inadmissibility" is irrelevant in this respect.

14. The second scenario mentioned by the President in point 25 (appeal against a patent grant) has been assessed differently in two earlier decisions of the Legal Board of Appeal. In decision J 3/04 of 20 September 2005 (point 5 of the Reasons), it was stated that the suspensive effect of the appeal does not depend on its admissibility or on whether the appellant is aggrieved within the meaning of Article 107 EPC, and that the finding of an abuse of process must be carefully substantiated. However, the Board apparently took the view that this suspensive effect is retroactively eliminated if the appeal against the parent application is withdrawn (see point 4 of the Reasons).

In decision J 28/03 of 4 October 2004 (OJ EPO 2005, 597), the Court held that an appeal against a decision to grant a patent cannot claim the "special suspensive effect" enjoyed by an appeal against the refusal of an application (point 9 of the Reasons). In such a case, any further action (including filing a divisional application) depends entirely on the outcome of the appeal proceedings. The final decision of the Board of Appeal must be awaited. Since the appeal was dismissed as inadmissible with respect to the parent application, the legal situation as it existed at the time of the patent grant was thereby restored, as if no appeal had been filed (points 16 and 17 of the Reasons).

15. The case law presented above was further developed in essential aspects by the Legal Board of Appeal in its more recent decision J 1/24 of 16 April 2024.

The Board emphasized, firstly, that it did not share the legal opinion in J 28/03 (point 11 of the Reasons), according to which an appeal against a patent grant decision would likely be inadmissible under Article 107, first sentence, EPC, and therefore a divisional application should not be possible during the appeal proceedings. The situation is not comparable to that in which an appeal is lodged that is not provided for as a remedy by the EPC at all, as in the case of an appeal by a third party. The EPC generally permits appeals against patent grant decisions. Such an appeal cannot therefore be considered manifestly inadmissible (see point 10.5 of the Reasons).

Furthermore, the Board disagreed with the legal opinion in J 28/03, according to which the pendency of the parent application should depend on the outcome of the appeal proceedings. According to current first-instance practice, an appeal against a patent grant decision is considered validly filed, and the intended date for publication of the patent grant notice is cancelled. A new date is only set after the conclusion of the appeal proceedings. If the pendency of the application depended on the outcome of the appeal proceedings, this would contradict this practice and would also jeopardize legal certainty for third parties (see point 10.5 of the Reasons).

16. In J 1/24, the suspensive effect of the appeal was thus affirmed even in the second scenario addressed by the President of the EPO in G 1/09, and its commencement was not made dependent on the subsequent outcome of the appeal proceedings. A divisional application filed during pending appeal proceedings against a patent grant decision is and remains effective.

17. Although the results of decision J 1/24 were recently contradicted in a decision of a Technical Board of Appeal, in T 700/25 of 28 November 2025 the Board did not have to decide on the validity of a divisional application, but rather on the reimbursement of the appeal fee. It held that the appeal against the patent grant decision was manifestly inadmissible for lack of standing and therefore had no effect (see Reasons 14), so that the appeal fee had to be reimbursed for lack of legal basis and not on the basis of Rule 103(1)(b) EPC.

18. In the present case, it is not necessary to address in detail the criticism leveled in T 700/25 against the results of J 1/24. It should be noted, however, that in recent years several Boards of Appeal decisions have been handed down in which appeals against patent grant decisions were successful and deemed both admissible and well-founded (see, for example, T 1003/19, T 2081/16 and T 408/21), and that, therefore, the view that such an appeal is (in every case) manifestly inadmissible appears highly questionable.

19. Moreover, it follows from the decision of the Enlarged Board of Appeal G 2/19 that it is very problematic to adopt a general concept of a manifestly inadmissible appeal. It therefore declined to answer preliminary question 1, which used this concept. The preliminary question, with its criterion of an "appeal that is inadmissible at first glance," relies on an indeterminate legal concept that does not originate in the EPC and for whose specification no further indications can be found therein (Reasons A.IV).

20. For the reasons stated above, recent developments in case law support denying the suspensive effect of an appeal, which is expressly provided for in Article 106(1), second sentence, EPC, only in very exceptional cases "on account of manifest inadmissibility", i.e., where - as in the case of an appeal by a third party - the remedy lodged is not available at all under the EPC.

21. However, if – as in the present case – an appeal that was initially validly filed subsequently becomes inadmissible because the statement of grounds of appeal is not filed or is filed only after the expiry of the prescribed time limit, this is not a sufficient reason to make an exception to Article 106(1), second sentence, EPC and to consider the suspensive effect that initially took effect as having been lifted as soon as the time limit for filing the statement of grounds of appeal expired. Rather, the suspensive effect ends only with the conclusion of the appeal proceedings, in the present case, that is, after the Board of Appeal has determined the inadmissibility of the appeal by decision. This termination has no retroactive effect with regard to divisional applications that were filed while the suspensive effect was in force.

22. The Board is therefore of the opinion that the view expressed in J 22/13 should no longer be followed. The European parent application No. YY YYY YYY.Y was thus still pending within the meaning of Rule 36 EPC at the time when the European application No. XX XXX XXX.X was filed.

23. Consequently, the appeal must be granted and the contested decision overturned.

A decision on the appellant's further request to declare the finding of loss of rights under Rule 112(1) EPC null and void is not necessary. The communication under Rule 112(1) EPC of 12 March 2025 has already been issued.

repealed by the appellant's request for a decision under Rule 112(2) EPC of 11 April 2025.


Decision formula

For these reasons, the decision is made:

1. The contested decision is overturned.

2. The application shall be treated as a divisional application of European patent application No. YY YYY YYY.Y.